Sony Music has asked a court in Ohio to dismiss the slightly bizarre lawsuit filed against it by American shoe seller DSW Shoe Warehouse, in which the footwear retailer asked the judge to rule that it hasn’t infringed any copyrights by including pop songs in promotional videos it posted to social media.
It’s a slightly bizarre lawsuit because usually it is copyright owners that sue alleged copyright infringers, not the other way round. But, says Sony in a new court filing, DSW went that bizarre route because it knew the music company was planning its own litigation in California and it wanted to force the dispute into the courts in Ohio, a practice known in legal circles as ‘forum-shopping’.
Sony claims that DSW filed its lawsuit “without warning” and “mere hours” after attempts to negotiate a settlement in their ongoing copyright dispute over the shoe seller’s social media posts stalled, at which point the major indicated that it planned legal action. Which means DSW’s lawsuit is “a textbook improper anticipatory action motivated by forum-shopping which the court should not allow”.
DSW is the latest company to face copyright infringement claims for including pop songs in its social media videos without securing the necessary licences from the relevant record labels and music publishers. Although platforms like Instagram and TikTok have their own music licences, those only cover user-generated content, not videos uploaded by brands.
That fact is pretty straightforward and communicated in the social media platform’s terms. And TikTok has a whole separate music library for brands. But that hasn’t stopped DSW taking the rather bullish position that Instagram and TikTok – and their music industry partners – actually encouraged everyone, including DSW, to include music in their videos, and that’s all the shoe sellers did.
But then the big bad major record companies suddenly decided to “pull the rug out from under DSW’s business operations” by claiming that “the very conduct that they previously encouraged and supported” was now copyright infringement.
It was Warner Music that first sued DSW over the unlicensed music in its social media posts. DSW then filed its lawsuit in Ohio naming Universal Music and BMG as well as Sony as defendants. It wants the judge in Ohio to confirm that its unlicensed use of pop music in promo videos was all fine. Sony then filed its own lawsuit against DSW in the Californian courts in August.
In its new legal filing responding to the Ohio claim, Sony says that when it first contacted DSW to discuss the unlicensed social media posts in May this year, “seeking to amicably resolve this dispute out of court”, lawyers at the shoe shop said they would also like an amicable settlement.
But, while that settlement was being discussed, the same lawyers were “secretly drafting a complaint” which they filed “just hours” after the settlement talks stalled.
Sony says the court should dismiss DSW’s lawsuit, partly for jurisdiction reasons, partly because the shoe company’s copyright claims are too vague, and partly because of all that sneaky forum-shopping.
